Yahoo! Inc. v. Bodala Vamshi Krishna
Claim Number: FA1202001427841
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Bodala Vamshi Krishna (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo-movies.net>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2012; the National Arbitration Forum received payment on February 2, 2012.
On February 2, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <yahoo-movies.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@yahoo-movies.net. Also on February 3, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yahoo-movies.net> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoo-movies.net> domain name.
3. Respondent registered and used the <yahoo-movies.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a digital media company with content covering news, shopping, photo sharing, finance, and electronic mail service. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the YAHOO! mark (e.g., Reg. No. 2,040,222 registered February 25, 1997).
Respondent, Bodala Vamshi Krishna, registered the <yahoo-movies.net> domain name on May 16, 2008. Respondent’s domain name previously resolved to a website providing movie reviews and information. Respondent’s domain name does not currently resolve to an active website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant argues that it has protected rights in its YAHOO! mark through its various trademark registration of that mark with the USPTO (e.g., Reg. No. 2,040,222 registered February 25, 1997). Previous panels have held that a USPTO trademark registration is sufficient for a complainant to establish Policy ¶ 4(a)(i) rights in a mark, regardless of Respondent’s identified location. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). In this present case, Respondent’s identified location is India. However, the Panel relies on the above precedent in finding that Complainant has presented sufficient evidence to establish its rights in the YAHOO! mark under Policy ¶ 4(a)(i).
Complainant contends that the <yahoo-movies.net> domain name is confusingly similar to Complainant’s YAHOO! mark. The Panel notes that Respondent removed the exclamation mark from Complainant’s mark while adding a hyphen and the generic term “movies.” Further, Respondent also includes the generic top-level domain (“gTLD”) “.net.” Prior panels have determined that domain names combining Complainant’s YAHOO! mark, absent the exclamation mark, with a generic term and a gTLD are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Yahoo! Inc. v. Vorot, FA 159547 (Nat. Arb. Forum July 16, 2003) (finding that domain names such as, <yahoomovie.com> and <yahoomovies.com> are confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i)); see also Yahoo! Inc. v. [--], FA 1139567 (Nat. Arb. Forum Mar. 12, 2008) (“Thus, the Panel concludes that the <yahoogreen.com> domain name is confusingly similar to Complainant’s YAHOO! mark, as contemplated by Policy ¶ 4(a)(i).”). Other panels have also determined that the inclusion or omission of punctuation and hyphens is irrelevant under a Policy ¶ 4(a)(i) analysis. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Based upon the arguments of Complainant, the lack of arguments from Respondent, and the prior case precedent noted above, the Panel finds that Respondent’s <yahoo-movies.net> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).
Policy ¶ 4(a)(i) is satisfied.
Complainant argues and presents evidence to show that Respondent does not possess rights and legitimate interests in the <yahoo-movies.net> domain name as proclaimed under Policy ¶ 4(a)(ii). Under UDRP procedure and case precedent, a complainant must first present its arguments and evidence amounting to a prima facie showing of its assertions. Upon such a showing, the burden will then properly shift to a respondent to present its assertions of rights and legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted onto the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant here has presented a prima facie case in support of its assertions. Due to Respondent’s failure to submit a Response in this matter, the Panel assumes that the allegations contained in the Complaint are true unless clearly contradicted by the submitted evidence. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel will therefore continue to evaluate the evidence on record to determine whether Complainant’s assertions are sufficient under the Policy ¶ 4(c) factors.
Complainant first asserts that Respondent is not commonly known by the disputed domain name where the registrant is identified, per the WHOIS information, as “Bodala Vamshi Krishna.” Further, Complainant notes that nothing from the previously resolving website indicates a connection between Respondent and the disputed domain name, and that Complainant has not granted Respondent permission to use its YAHOO! mark in any way. Respondent has not responded to these allegations in any way. Therefore, the Panel finds that Respondent is not commonly known by the <yahoo-movies.net> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Second, Complainant asserts that Respondent previously used the disputed domain name to redirect Internet users to a website entitled “Yahoo Movies,” which provided information on movies in competition with Complainant’s own movie review website. Complainant has submitted evidence to show that it provided similar movie content through its official <movies.yahoo.com> domain name. Complainant also provides a screenshot from Respondent’s previous website, available through the Internet archive Wayback Machine website showing such competing use. The Panel finds that Respondent’s previously competing use is evidence that Respondent has not used the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Third, Complainant contends that sometime in 2011, Respondent removed all active content from the disputed domain name and that the domain name does not currently resolve to an active website. Complainant’s screenshot in this regard shows a webpage that states, “Oops! The page you are looking for could not be found.” The Panel finds that Respondent’s current failure to make an active use of the <yahoo-movies.net> domain name is also not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Policy ¶ 4(a)(ii) is satisfied.
Complainant alleges that Respondent’s previous use of the <yahoo-movies.net> domain name to direct Internet users to a directly competing movie information and review website shows Respondent’s intent to disrupt Complainant’s business and Internet activities. Complainant asserts that using Complainant’s YAHOO! mark in order to redirect Internet users to Respondent’s competing website is evidence of bad faith under Policy ¶ 4(b)(iii). The Panel agrees and finds that Respondent’s previous use of the disputed domain name in a competing manner is evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Further, Complainant argues that Respondent’s registration and previous use of the disputed domain name also constitutes bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s competing use of the disputed domain name shows an intent to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s YAHOO! mark. The Panel agrees and finds that Respondent’s previous use of the domain name, presumably for financial gain, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant also asserts that Respondent’s current failure to make an active use of the disputed domain name is also evidence of bad faith. The Panel notes in this regard that Respondent has not come forward with any evidence indicating why it removed all active content from the website or revealing its future plans for the domain name. Therefore, the Panel accepts Complainant’s arguments and finds that Respondent’s current non-use of the <yahoo-movies.net> domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Lastly, Complainant asserts that its YAHOO! mark has become a famous trademark, and that Respondent could not have possibly registered the disputed domain name without knowledge of Complainant’s mark. Further, Respondent previously used the disputed domain name to provide competing services to Complainant’s services under its mark. While constructive knowledge has not been held to be sufficient for a finding of bad faith under Policy ¶ 4(a)(iii), the Panel finds that Respondent had actual knowledge of Complainant’s mark prior to registering the domain name, which is evidence of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoo-movies.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 12, 2012
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